Gavel to Gavel: New trademark rules

There’s good news for trademark owners who want to protect the value of their marks: Recent changes to the rules governing trademark opposition and cancellation proceedings have made those proceedings more efficient and economical.

Opposition proceedings and cancellation proceedings are administrative, paper-based trials before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board. In an opposition proceeding, the plaintiff seeks to prevent a trademark applicant from obtaining a federal trademark registration. In a cancellation proceeding, the plaintiff seeks to cancel an existing federal trademark registration. In either case, the TTAB – rather than a jury – will resolve the question of whether a mark should be permitted to obtain, or retain, federal protection.

Opposition and cancellation proceedings can be used to resolve disputes concerning, for example, whether one mark is likely to cause confusion with respect to another mark, which of two users was the first to use a mark in commerce, and whether a particular mark is entitled to federal protection. These proceedings are essential tools in the arsenal of any trademark owner who seeks to vigorously enforce its trademark rights. However, trademark owners often decline to initiate these proceedings due to cost concerns.

The new rules enacted by the TTAB streamline the trial process, and these changes have the potential to alleviate some concerns regarding the cost of these proceedings. Among other things, the revised rules permit parties to offer testimony by affidavit or declaration, rather than by deposition. This less formal method of introducing testimonial evidence may, if used properly, render TTAB proceedings substantially more cost-efficient. In addition, the new rules have capped the number of discovery requests that can be asked in a TTAB proceeding. By placing an upper limit on the number of discovery requests that may be issued, the TTAB has limited the extent to which a litigant faces the financial risk of unlimited discovery.

These and other changes to the TTAB rules will make opposition and cancellation proceedings a much more cost-effective means of protecting and enforcing trademark rights. Trademark owners should take this opportunity to investigate whether and how these proceedings can be used as part of a comprehensive, and cost-effective, trademark enforcement strategy.

Jessica John Bowman is a patent attorney and trial lawyer with McAfee & Taft.